On March 31, 2020, the Ninth Circuit (the “Court”) reversed a district court ruling in favor of Jack Daniel’s Properties Inc. (“JDPI”) in a trademark and trade dress dispute involving “Bad Spaniels Silly Squeaker”—a chew toy for dogs—that looks similar to the Jack Daniel's whiskey bottle but replaces certain words with scatological puns.  For example, as can be seen in the side-by-side pictorial comparison below, “Jack Daniel’s” is replaced with “Bad Spaniels,” “Old No. 7” with “Old No. 2,” and alcohol content descriptions with “43% POO BY VOL.” and “100% SMELLY.”

Background:  

VIP Products (“VIP”) designs, markets, and sells “Silly Squeakers,” rubber dog toys that resemble the bottles of various well-known beverages, but with dog-related puns.  One such Silly Squeaker, for example, resembles a Mountain Dew bottle, but is labeled “Mountain Drool.”  The Bad Spaniels dog toy is part of VIP’s Silly Squeaker line.  VIP’s purported goal in creating Silly Squeakers was to “reflect” “on the humanization of the dog in our lives,” and to comment on “corporations [that] take themselves very seriously.”

In 2014, JDPI “demand[ed] that VIP cease all further sales of the Bad Spaniels toy.”  VIP filed an action, among other things, for a declaratory judgment that the Bad Spaniels dog toy “does not infringe or dilute any claimed trademark rights” of JDPI and that its trade dress and bottle design are not entitled to trademark protection.  JDPI counterclaimed trademark and trade dress infringement.

In general, claims of trademark infringement under the Lanham Act are governed by a “likelihood-of-confusion” test, which asks (1) whether a plaintiff has a valid, enforceable trademark and (2) whether a defendant’s use of the trademark is likely to confuse the public.  One available defense for a defendant is fair use under the First Amendment, available when the defendant’s use of a plaintiff’s trademark is an artistic expression.  VIP claimed that defense.

However, during summary judgment, among other things and most relevant for this article, the district court held that VIP was not entitled to the First Amendment fair use defense because the scatological puns were not artistic expressions and its use of JDPI’s trade dress and bottle design “promote[d] a somewhat non-expressive, commercial product.”  The district court proceeded then, at the end of a four-day bench trial, to conclude that JDPI had established dilution by tarnishment and infringement of its trademarks and trade dress.

The Court reversed, vacated, and remanded:  

First, the Court analyzed whether the scatological puns in the Bad Spaniels dog toy were artistic expressions.  Recently, the Court, in Gordon v. Drape Creative, Inc., 909 F.3d 257, 268 (9th Cir. 2018), performed a similar analysis in the context of greeting cards.  The greeting cards combined the trademarked phrases “Honey Badger Don’t Care” and “Honey Badger Don’t Give a S - - -” alongside announcements of events such as Halloween and a birthday.  And even though “the cards did not show great ‘creative artistry,’” the Court concluded that the cards were protected under the First Amendment because they “convey[ed] a humorous message through the juxtaposition of an event of some significance—a birthday, Halloween, an election—with the honey badger’s aggressive assertion of apathy.”  Applying the same reasoning here, the Court held that while “surely not the equivalent of the Mona Lisa,” the Bad Spaniels dog toys contained artistic expressions because they turned the serious phrases that JDPI sought to enforce into “humorous message[s].”  As such, the Court held that the Bad Spaniels dog toys were protected by the First Amendment and reversed the district court’s summary judgment order.

Second, the Court vacated the district court’s judgment on infringement because the district court had failed, during summary judgment, to apply the test set forth in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), which strives to strike a balance between the First Amendment and trademark rights.  The Rogers test requires a plaintiff to show that a defendant’s use of the mark is either (1) “not artistically relevant to the underlying work” or (2) “explicitly misleads consumers as to the source or content of the work,” before claiming trademark infringement under the Lanham Act.

Takeaways:  

While not setting a clear bar, the Court suggested a “low” bar to when a work can be considered an artistic expression—“A work need not be the expressive equal of Anna Karenina or Citizen Kane to satisfy this requirement . . .”—and that the commercial nature of a work does not automatically render it non-artistic.  In remanding the case back to the district court, the Court reiterated how hard it is to sue for trademark infringement involving goods with artistic expressions by explicitly pointing to Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007).

In Haute Diggity Dog, the defendant Haute Diggity Dog manufactured dog chew toys that mimicked Louis Vuitton handbags.  For example, the Haute Diggity Dog toys were shaped roughly like a handbag; were named Chewy Vuiton; had CV monograms with the repetitious design and color (i.e., the toile monogram).  The Fourth Circuit performed an extensive analysis under the principles of parodies—“a parody relies upon a difference from the original mark, presumably a humorous difference, in order to produce its desired effect.”  It then concluded that because the Haute Diggity Dog toys did exactly that, they were successful parodies and as such did not infringe on Louis Vuitton’s trademarks.

The Fourth Circuit's Haute Diggity Dog opinion has been persuasive to other circuits before.  For example, in Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., 156 F. Supp. 3d 425, 435 (S.D.N.Y.), aff'd, 674 F. App'x 16 (2d Cir. 2016), the S.D.N.Y. district court took the Fourth Circuit's analysis on parodies a step further.  In My Other Bag, the defendant My Other Bag ("MOB") sold canvas tote bags with the text “My Other Bag . . .” on one side and drawings meant to evoke iconic handbags by luxury designers, in this case:  Louis Vuitton, on the other—a play on the classic “my other car . . .” novelty bumper stickers.    Louis Vuitton sued MOB, among other things, for trademark infringement.  Persuaded by the Fourth Circuit's opinion in Haute Diggity Dog, the S.D.N.Y district court stated that "a parody clearly indicates to the ordinary observer that the defendant is not connected in any way with the owner of the target trademark."  And because the MOB tote bags with the phrase "my other bag . . ." did exactly that, they were parodies of Louis Vuitton's bags.  "The fact that MOB’s totes convey a [broader social] message about more than just Louis Vuitton bags is not fatal to a successful parody defense."  The S.D.N.Y district court thus concluded that the MOB tote bags did not infringe Louis Vuitton's trademarks.  The Second Circuit affirmed. 

Like the Second Circuit, it appears that the Ninth Circuit agrees with Fourth Circuit's Haute Diggity Dog opinion:  As the Court said, “[n]o different conclusion is possible here.”